01-Feb-2024
Written by: Jean-Pierre Frangieh
A trademark is a mark or symbol identifiable or attached with the goods so that they can be distinguished from other types of similar goods. Trademarks help the consumers to identify goods with a particular trader. A trademark can be a label or a picture or combination of colors which is applied to the goods which acts as its identity. It portrays the quality of goods in the minds of the consumers and with the passage of time, that mark may become a well-known name.
Trademark plays a very pivotal role in giving a business its identity and goodwill. (1)
Needless to say, the main function of a trademark is to be able to distinguish goods and services of the same kind in the market. When a registered trademark ceases to function as a source indicator for long, it is not worthy of protection anymore in light of the legislative intent of the Law. (2)
Indeed, most of the modern trademark laws stipulate that the owner of the trademark is obligated to use it and put it on his goods and products or display it accompanying the services he provides. If he fails to use this without any justification for a certain period of time, then his right to own the mark is legally forfeited, and it is up to any interested person to claim that.
The TRIPS Agreement has also dealt with this issue and considered the non-use as one of the reasons that may lead to deletion of the trademark, as Article 19 states the following:
“1. If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use.
2. When subject to the control of its owner, use of a trademark by another person shall be recognized as use of the trademark for the purpose of maintaining the registration.”
This article will discuss burden of proof in trademark cancellation lawsuits for non-use in Qatari law n˚9 of 2002.
The Trademark Cancellation Action for non- use
Non-use cancellation is a legal proceeding for cancelling the registration of trademark based on the claim that such trademark has not been genuinely use in course of trade, within a proper period, by the trademark owner who registers such trademark to commercially utilize to the trade and benefit to the economic. In addition, the cancellation can also claim that such trademark owner has no intention to use the trademark in commerce. This kind of cancellation, non-use scheme, can be a significant method for cleaning up the cluttered Registry records, and help in revoking the registration of unused trademarks from the system. This could, in turn, provide the opportunities for later comer, who may genuinely use an identical or similar trademark in commerce, but its application has been rejected by the Registrar due to the obstacle of the prior registration of such unused trademark. The later comer may file a cancellation to eliminate such obstacle and finally obtain the protection. (3)
In most countries, the non-use cancellation request must be filed as a petition with the Trademark Office in each country. In some countries like Qatar ,UAE,and Egypt, it is considered as a litigation process that must be presented as a lawsuit with the Court within particular jurisdiction.
The Art 24 of Law n˚ 9 of 2002 states:
“1- Any person concerned may request the court to cancel the mark if the owner has failed to use the mark or to cause it to be used by a third party in Qatar for five consecutive years without reasonable justification.
The request for cancellation may apply to the whole or part of the goods or services for which the mark was registered. The case for cancellation shall not be only be accepted after at least one month has elapsed from the date the applicant for cancellation notified the owner of the mark regarding the use thereof.
2 - The court shall issue a ruling of cancellation after confirming that the owner has abandoned the use of the mark without reasonable justification.
3 - The final decision issued for the cancellation of a mark shall be communicated to the Office and the owner of the mark.
4 - Cancellation shall be publicized in the Gazette and noted in the Registry. Registration of a mark shall be deemed to have never existed as from the date it ceased to be used.”
The article 24 mentioned above requires that a registration which could be cancelled only when it has been in an uninterrupted period of five consecutive years of non-use by its owner, whether these five years have been since the registration of the mark or after its registration and use for a certain period. It is not enough that five years have passed intermittently, but the use must be within five consecutive years.
However, if the non-use of the trademark is based on a justifiable reason, the 5-year period shall not expire as long as the justifiable reason continues. The justifiable reasons are not explicitly listed in Law n˚ 9 of 2002; however, they are explained in Article 19 of the TRIPS, and determined also by courts decisions.
The European Court of Justice considered there is genuine use of a trademark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. (4)
As per Law n˚ 9 of 2002 the request to cancel the registration of the trademark for non-use shall be submitted to the competent court and not to the administrative authority, which is the Commercial Registration Authority. The court shall order the cancellation of the registration if it is established that it has not been in use for a period of five consecutive years without reasonable justification.
Burden of Proof in trademark Cancellation Action for non- use
The burden of proof and requirement for standard of proof is upon each internal regulations of Trademark Law and practice in each country, which in some countries, the burden of proof lies on the petitioners, but in some countries, the trademark owner will bear such burden. (3)
According to the Art 8 (b) of the Syrian trademark law n˚8 of 2007 the burden of proof is on the respondent.
Under French and UK law, anyone may file a trademark revocation action directly before the Intellectual Property Office without the need to demonstrate interest or provide any substantiated claims supporting the request. The burden of proof lies solely on the trademark proprietor.
However, under UK legislation, if a party files an application for revocation of a trademark without first notifying the trademark proprietor, and the trademark proprietor surrenders the registration without defending it, then costs will not be awarded to the party applying for revocation. (5)
As for Qatari law, Law n˚ 9 of 2002 has not addressed the issue of burden of proof in trademark cancellation lawsuits for non-use, therefore it is necessary to refer to the Civil and Commercial Procedure Law n˚13 of 1990 to determine who bears the burden of proof, the plaintiff or the defendant.
In the light of Article 211 of the Civil and Commercial Procedure Law numbered 13 of 1990, the burden of proof is on the claimant.
The Art 211 of the Civil and Commercial Procedure Law states:
“The creditor shall prove the existence of liability while the debtor shall disprove liability thereof.”
Based on the Qatari law, in a civil lawsuit, the burden of proof rests on the plaintiff or the person filing the suit. The plaintiff should prove that the allegations are true and that the defendant, or the other party, caused damages. Therefore, under Qatari Law, the plaintiff who file a cancellation petition must bear the burden of proof of the alleged non-use of the disputed trademark.
According to some experts' opinions, a tendency of imposing a burden of proof for such non-using trademark should be bound by the registered owner, rather than the petitioner. (6) It is very difficult for any third party who has no access to the facts and information of the use of trademark to prove its non-use. It was opined that in case of removing a deadwood from the registry records as this method of non-use cancellation, such a reversal of the burden of proof seems to be justified. (6)
Conclusion
It seems that the trend in the world today is to place the burden of proof on the defendant in trademark cancellation lawsuits for non-use, and some countries have adopted provisions in their trademark law that shift the burden of proof on the defendant in order to help cleaning up the cluttered Registry records, and help in revoking the registration of unused trademarks from the system since it is very difficult for any third party who has no access to the facts and information of the use of trademark to prove its non-use.
However, in the author’s view and pursuant to the provision of the Qatari law n˚13 of 1990 and law n˚9 of 2002 currently in force the burden of proof in trademark cancellation lawsuits for non-use remains on the plaintiff who file the cancellation petition.
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1-Neetu.B. Shambharkar. Notion of Deceptive Similarity under Trademark Law with Reference to Landmark Cases in India: A Legal Insight. International Journal of Law Management &Humanities Vol 3 Iss 6 – 2020
2- www.mark-iplaw.jp Non- Use Cancellation.
3-NON-USE CANCELLATION AGAINST TRADEMARK REGISTRATION IN THAILAND Jeerakarn Nakarat.
4- The European Court of Justice Case C- 40/01 Ansul BV v. Ajax Brandveveiliging BV 11/3/2003.
5- Trademark Revocation Actions for Non-Use: Who Bears the Burden? MAY 2022 COMMENTARY JONES DAY LAWFIRM. www. jonesday.com
6- World Intellectual Property Organization (WIPO). Background Reading Material on Intellectual Property. 78. (2nd Edition. WIPO Publication, 2008)